MASTERCLASS Presentation by The Hon Neil Brown QC For Canadian International Internet Dispute Resolution Centre

MASTERCLASS
        Presentation by The Hon Neil Brown QC
                           For
Canadian International Internet Dispute Resolution Centre
                    9 December, 2021
        Domain Name decisions from the CIIDRC

CIIDRC is accredited by ICANN
to administer UDRP disputes

• The presentation is about decisions made in UDRP cases
  administered by CIIDRC.
• CIIDRC’s first UDRP decision: 30 Dec. 2019. In 2 years, an
  impressive array of decisions has been made.
• There are now 42 decisions by CIIDRC panellists on most of the
  major issues that arise: a great achievement.
• Decisions are not precedents, but are illustrations of what panels
  have decided in previous cases.
• Some trends emerge and, of course, the decisions show how panels
  may well decide a case on similar facts in the future.
• Where are the decisions? At:
  https://ciidrc.org/domain-name-disputes/ciidrc-decisions/
• Who has made these decisions? Panellists appointed by CIIDRC
  under the UDRP and its Rules.
• Are decisions of 3- person panels more significant than 1-person
  panels?
• A useful source. G. Levine, Domain Name Arbitration, Second
  Edition.

THE NEED FOR EVIDENCE

• The most important principle is that Complainants must
  prove all 3 of the 3 elements set out in Paragraph 4(a)
  of the UDRP.
• “In the administrative proceeding, the complainant must
  prove that each of these three elements are present.”

•    Daiso Canada Co., Ltd v. Fairchild Property Group Ltd. UDRP-
    15164 ( CIIDRC’s number), 17 May 2021, ,
    DAISO. The claim failed because there was no evidence
    of the agreement under which the Domain Name had
    been registered, its terms or how it was terminated.

• Now we turn to the three elements that the Complainant
  must prove under the UDRP.

FIRST ELEMENT: THE DOMAIN NAME IS IDENTICAL OR
CONFUSINGLY SIMILAR TO THE COMPLAINANT’S
TRADEMARK. REGARDED AS A REQUIREMENT TO GIVE
STANDING

The Complainant must prove its trademark. A common law TM is
adequate, if proved. A mere name is not enough.

– Agreema Inc. v. Joel Kapongo UDRP-15075, 27 May 2021,
  , AGREEMA.

– Parliam Bank v. CJ Stone, UDRP-14475, 18 Jan 2021,
  , no TM of JAY BLOOM proved.

– Adrianus Theodorus van Dorp v. MailPlanet.com, Inc. UDRP-15988, 20
  Sept 2021, , no TM of VAN DORP proved.

Nor are mere applications for TMs or TMs on the USPTO
Supplementary Register adequate:
– Graham v. Machotech / Luna Morgan, 16308-UDRP, 28 Nov.2021.

– Bijouterie Langlois v. Webproaction, UDRP-15634,
  , 1 Aug. 2021

PROOF OF A TRADEMARK:
If the TM is registered, it is easy to prove, by registration certificates.

But if a common law TM, it must be proved by evidence.
• Unemployed Professors v. Francis Kamau, UDRP- 14887, 7 April 2021,
  . Transfer.

• Unemployed Professors v. Alexander Ershov, UDRP-15264, 14 May
  2021;; 9 years in business; written up in
  commentary websites like Slate as “global leader” in “original custom essay
  writing.” Transfer.

Often, the common law trademark will have to be proven from complex commercial
facts. As in:

• Haydee Muñoz v. Gianni De Santis UDRP-14529, 2 March 2021,
  . The claimed TM was Complainant’s company name she
  had used in her business.

• Jeffrey Edwin Poss v. Jim Laffoley, UDRP-9149, , 17 March
  2020, CALTON CASES.

When the trademark is proved, and the Complainant has standing, it must then
prove that the domain name is identical or confusingly similar to its trademark.

Prior decisions have set out some presumptions:

(a)If the domain name contains the whole of a distinctive TM, it is presumed to be
confusingly similar.

       •   Arbec Forest Products Inc. v. Gilbert Tremblay, UDRP-
           15163;;11 May 2021; ARBEC.

(b) Typosquatting will lead to finding confusing similarity:

            • Lassonde Industries v. Morex, UDRP-15450, 16 June 2021, ,
              LASSONDE.

            • Unemployed Professors v. Alexander Ershov, UDRP-15264, 14 May 2021,
              , UNEMPLOYED PROFESSORS.

            • Traxys North America LLC v. Joao Mota Inc, UDRP-14373,15 Jan.
              2021, TRAXYS.

NOTE: the claim may fail: Graham v. Machotech / Luna Morgan ,16308-UDRP,
Nov. 28, 2021, GRAHAM.

SECOND ELEMENT: RESPONDENT HAS NO RIGHTS OR
    LEGITIMATE INTERESTS IN THE DOMAIN NAME

CRITERIA FOR AN RLI:

(i) BONA FIDE OFFERING OF GOODS AND SERVICES OR
    DEMONSTRABLE PREPARATIONS TO USE IT FOR: PARA 4 (c) (i)

•   Arbec Forest Products Inc. v. Gilbert Tremblay, UDRP-15163, 11 May
    2021, . The defence failed, as use in an industrial
    dispute is not a bona fide offering of goods or services.

•   Eric Turvey (VP Unemployed Professors) v. Rowley Smith UDRP-12953,
    21 Sept. 2020, . Defence failed for lack of
    evidence.

DEMONSTRABLE PREPARATIONS TO USE THE
DOMAIN NAME FOR A BONA FIDE PURPOSE UNDER
PARA 4(c)(i)

Evidence is particularly important and frequently argued.

A question of degree.

Useful: business plan; business name; marketing;
advertising; consultants; employees; paid advice.

Look for high quality evidence on these issues, by Affidavit
or Declaration.

(ii) THE RESPONDENT WAS COMMONLY KNOWN
BY THE DOMAIN NAME: PARA 4(c)(ii)

• G. A. Modefine S.A. v. A.R. Mani, ,
  WIPO Case D2001-0537

(iii) USING THE DOMAIN NAME FOR A LEGITIMATE
    NON-COMMERCIAL OR FAIR USE: PARA 4 (C)(iii)
Fan sites, gripe sites, political speech, dictionary words.

•   Arbec Forest Products Inc. v. Gilbert Tremblay, UDRP-15163, 11 May
    2021, . That defence failed, as the aim of the DN
    and the petition was to injure the Complainant by way of a boycott.

•   Levy Zavet LLP v. Unknown, UDRP-11857, , 11 June
    2020, LEVY ZAVET

Can be no RLI where the domain name is used for a fraud.

AN ISSUE OF GREAT CONTROVERSY:
GENERIC WORDS
•   Klir Platform Europe Limited v. As Identified In the Notification of
    Commencement UDRP-15008, 2 April 2021, < klir.com>, KLIR.

Short domain names and acronyms have inherent value. Also, no targeting
of the Complainant. Respondent bought the domain name at a public
auction. This gave it an RLI in this 4 letter domain name.

The Respondent acquired the domain name before the Complainant
acquired its trademark rights; therefore no bad faith registration.

Also, a finding of RDNH against the Complainant, as a Plan B where the
Respondent had rejected offers from the Complainant to buy the domain
name.

Must the DN be used within the meaning of the generic word itself?
•   E. Arvanitakis & SIA OE ( Deltos Publishing) v. Stavros Bazigos, UDRP-
    13576, and , 20 Oct.2020.

THIRD ELEMENT: BAD FAITH REGISTRATION AND USE

    Difficult to prove bad faith registration if the domain
    name was registered before the TM rights were
    acquired.

• Klir Platform Europe Limited v. As Identified In the Notification of
  Commencement UDRP-15008, 2 April 2021, < klir.com>, KLIR.

But the defaulting buyer of a business may still have registered the
domain name in bad faith.

•    Jeffrey Edwin Poss v.Jim Laffoley, UDRP-9149,
     , 17 March 2020, CALTON CASES.

CRITERIA FOR ESTABLISHING BAD FAITH

 (i)    RESALE: PARA 4 (b) (i)
• Bijouterie Langlois v. Webproaction, UDRP-15634,
     , 1 Aug. 2021; BIJOUTERIELANGLOIS.
     Extortion.

(ii)     REFLECTING THE MARK BEING USED IN THE DOMAIN
         NAME : PARA 4 (b)(ii)
•      Humdinner, Inc. v. Brett Gould, 14528-UDRP, 2 February 2021,
       < humdinner.com>.

(iii) DISRUPTING BUSINESS: PARA 4 (b) (iii)
   •   A clear case in Sunspace Modular Enclosures Inc. v. Kathy
       Beaman,15868-UDRP, 1 Oct. 2021
       , SUNSPACE.

   (a) being a former agent;
   (b) terminated;
   (c) retaining the domain name;
   (d) using the TM;
   (e) preventing the Complainant from using a domain name for
      its Charleston business;
   (f) passing off.

•    Same, in Arbec Forest Products Inc. v. Gilbert Tremblay, UDRP-15163, 11 May
     2021,  because the petition asked for a boycott, so the
     intention must have been to disrupt the Complainant’s business within Policy 4
     (b)(iii).

•    Husky Oil Operations Ltd., v. Emilky Pulse, UDRP-14889, 13 April 2021,
     .

    Based on Respondent phishing and redirection to Complainant’s site.

(iv) CAUSING CONFUSION IN THE MARKET: PARA 4 (b)(iv)
Seraphim Sense Ltd v. Przemysloaw Siberia, UDRP-12286 -, 3 November 2020.

      On bad faith, the conduct of the Respondent showed bad faith. Some of its
      allegations were proved to be untrue and a simple search would have shown the
      existence of the Complainant. Implausible for the Respondent to have chosen
      this name in ignorance. So, in toto, the case comes under 4(b)(iv), confusion.

Engaging in an employment scam:
• Stantec Consulting Ltd. v. Colin Jackson , UDRP-12896, 14 Aug. 2020,
  
•   Lassonde Industries Inc v. Samuel. UDRP-14286, 23 Dec. 2020,
    
•   Graham v. Machotech / Luna Morgan, 16308-UDRP, 28 Nov.2021.

General Bad Faith
•   Autopath Technologies Inc., Melanie Chapple, UDRP-6911, ,
    CAR PAGES, 13 Jan. 2020

OTHER ISSUES

1. LANGUAGE OF THE PROCEEDING
    The language is that of the registration agreement, unless the Panel
    determines otherwise.

    • Edutec Limited v. Maria Antonyuk, UDRP-11941, ,
      26 April 2020, (Russian trademark).

   To determine confusing similarity when the domain name and the TM
   are in different languages, take the meaning understood by “a
   considerable part of the public understanding the meaning of the
   translation.”

2. CONSOLIDATION
    Provided for in the Policy itself, at Paragraph 4 (f); discretionary.

Allowed in:
    • Mejuri Inc. v. Sindy Chen, Allen Lee, Tracy Wu ,UDRP-12282, 19
       June 2020, , , mejuristore.com>.

3. EVIDENCE
   Can additional evidence be submitted by supplementary submission?
   Must show “exceptional circumstances”.
   Be careful; sometimes leave is refused.

    • Edutec Limited v. Антонюк Мария Валерьевна (Maria Antonyuk)
      UDRP-11941 26 April 2020 24author.com; AEMOP24

4. ALL IS NOT LOST
   A domain name may be recovered although the registration was
   not renewed when due and/or it was hijacked.

    • Seraphim Sense Ltd v. Przemysloaw Siberia, 12286 -UDRP, 3 November
      2020; , ANGEL SENSOR. Copied website and
      imitated Complainant.

5. PANELIST MAY DO LIMITED PRIVATE RESEARCH; INC. WAYBACK
   MACHINE
    • Seraphim Sense Ltd v. Przemysloaw Siberia ( supra). Website.

6. UDRP MAY NOT BE USED FOR GENERAL COMMERCIAL
   DISPUTES

    • Agreema Inc. v. Joel Kapongo

7. REVERSE DOMAIN NAME HIJACKING (RDNH).
    • YES. Klir Platform Europe Limited v. As Identified In the Notification
      of Commencement UDRP-15008, 2 April 2021, < klir.com>, KLIR.
    • NO . Agreema Inc. v. Joel Kapongo

     But is RDNH of any value?
……………………………………..

Remember: “…prove…” and evidence.

Thank you.
    Further information: www.domaintimes.info
        The Hon Neil Brown, QC
             Owen Dixon Chambers,
               205 William Street,
              Melbourne, VIC 3182
                  AUSTRALIA

        Email: nabrownqc@vicbar.com.au
   Telephone within Australia (03) 9225 7222
               Int. + 61 3 9225 7222
  Mobile telephone within Australia 0400 123 254
               Int. + 61 400 123 254

© The Hon N A Brown, QC. All rights reserved. 2021